DETAILED ACTION
This Office Action is responsive to the amendment filed on 1/29/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings were received on 1/29/2026. These drawings are accepted.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Li Pi Shan et al, WO2017/173293 (of record).
The examiner notes that Harris et al, EP2392611, has been cited as evidence that Li Pi Shan inherently meets a claimed molecular weight distribution (MWD) property.
Li Pi Shan discloses a modifier modifier comprising a block composite, 20 to 90 wt% of a first polyolefin, and 30 to 70 wt% of a second polyolefin (abstract). Li Pi Shan specifically discloses the production of a modifier wherein the first polyolefin is the commercial polymer ENGAGETM 8200 and the second polyolefin is the commercial polymer AFFINTIYTM GA1950 (¶0167: modifiers 3 and 5; ¶0166: Page 52: lines 22-28; ¶0166: Page 53: lines 20-28).
Regarding the claimed first ethylene/α-olefin interpolymer: The first polyolefin copolymer A is reported to be ENGAGETM 8200, which is an ethylene/octene copolymer having a melt index (190 °C, 2.16 kg) (I2) of 5.0 g/10 min (i.e. 5.0 dg/min) (for claims 1, 5) and a density of 0.870 g/cm3 (¶0166: Page 52: lines 22-28). ENGAGETM 8200 therefore corresponds to the claimed first ethylene/α-olefin interpolymer (for claim 1).
Regarding the claimed second ethylene/α-olefin interpolymer: The second polyolefin copolymer is reported to be AFFINITYTM GA 1950, which is an ethylene/octene copolymer having a I2 value of 500 g/10 min (i.e. 500 dg/min) (for claims 1, 4), a density of 0.874 g/cm3 (for claim 3), and a viscosity at 177 °C of 17000 cp (for claim 8) (¶01666: Page 53: lines 20-28). AFFINTIYTM GA1950 therefore corresponds to the claimed second ethylene/α-olefin interpolymer (for claim 1).
Regarding the sum of the amounts of first and second interpolymer: The prior art composition comprises the first polyolefin, the second polyolefin, and 10 to 50 wt% block composite (abstract). Based on the amount of the block composite, an ordinary artisan can deduce that the sum of the amounts of first and second polyolefin in the prior art modifier is in the range of 50 to 90 wt%, overlapping the claimed range (for claim 1).
Regarding the claimed relationship y ≤ 1.26 ln(x)-3.90 : As noted above, the first ENGAGETM 8200 and AFFINITYTM GA 1950 have I2 values of 5 and 500 g/10, respectively. The ratio of I2 of second to first polyolefin copolymers (x) would therefore be (500/5). Substituting these values into the required relationship yields the following.
y ≤ 1.26ln(500/5) - 3.90
y ≤ 1.26ln(100) - 3.90
y ≤ 1.26(4.61) - 3.90
y ≤ 5.80 – 3.90
y ≤ 1.90
Li Pi Shan renders obvious a modifier comprising 20 to 90 wt% ENGAGETM 8200, 30 to 70 wt% AFFINITYTM GA 1950, and the block composite. Note that the prior art modifier is required to contain a minimum of 10 wt% of the block composite (abstract). As such, an ordinary artisan will recognize that when the modifier comprises 30 wt% AFFINITYTM GA 1950, the maximum amount of ENGAGETM 8200 is 100-10-30 = 60 wt%, corresponding to a weight ratio (y) of 30/60 = 0.5. Similarly, when the amount of AFFINITYTM GA 1950 is the maximum amount of 70 wt%, the amount of ENGAGETM 8200 is 100-10-70= 20 wt%. The ratio (y) therefore has a maximum value of 70/20 = 3.5. The weight ratio (y) for the prior art modifier therefore ranges from 0.5 to 3.5, overlapping the range required by the claimed relationship (for claim 1).
Regarding claim 2: Substituting the I2 values of ENGAGETM 8200 and AFFINITYTM GA 1950 into the recited relationship results in the formula y < 1.90. As discussed in the previous paragraph, the ratio (y) for the prior art modifier comprising ENGAGETM 8200 and AFFINITYTM GA 1950 is in the range of 0.5 to 3.5, overlapping the claimed range.
Regarding claim 6: As noted above, the I2 ratio of the second polyolefin copolymer to first polyolefin copolymer A is 500/5 = 100.
Regarding claim 7: As above, the weight ratio of the second polyolefin copolymer to first polyolefin copolymer A is 45/75 = 1.8.
Regarding claim 9: As noted above, the prior art second polyolefin is the commercial polymer AFFINITYTM GA 1950. As reported by Harris, AFFINITYTM GA 1950 has a MWD of 2.2 (see page 64: Table).
Regarding claim 10: As noted above, the prior art first polyolefin copolymer A is the commercial polymer ENGAGETM 8200. Note that applicant’s specification discloses that ENGAGETM 8200 has a MWD of 2.34 (see specification: page 20, Table 1).
Regarding claims 11-14: Li Pi Shan is silent regarding the claimed DMS viscosity (for claims 11, 12) and relationships comparing tensile elongation at break and viscosity at 100 rad/s (for claim 13) or 0.1 rad/s (for claim 14); however, it is reasonably expected that these properties would be met by the prior art modifier composition.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed in the previous paragraphs, the Li Pi Shan renders obvious a modifier composition which
comprises the commercial polymers ENGAGETM 8200 and AFFINITYTM GA 1950, which correspond to the claimed first and second ethylene/olefin copolymers, respectively;
satisfies the relationship y ≤ 1.26 ln(x)-3.90;
has a sum of the amounts of first and second polyolefin in the required range of ≥ 75 wt%;
contains the second and first polyolefins in the same weight ratio to one another as in the claimed invention; and
has the same the I2 ratio of the second polyolefin to the first polyolefin as the claimed invention.
The prior art modifier composition therefore appears to be identical to the composition of the instant claims. As such, it is reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed composition would not be met by the prior art modifier composition (for claims 11-14).
Regarding claims 16, 17: As discussed in the previous paragraphs, Li Pi Shan discloses a modifier composition comprising a 10 to 50 wt% of a block composite, first polyolefin and a second polyolefin (abstract). Based on the amount of the block composite, it is calculated that the sum of the amounts of first polyolefin and second polyolefin is in the range of 50 to 90 wt%, overlapping the claimed range (for claim 17)
Said first polyolefin preferably has a melt index in the range of 1.0 to 15.0 g/10 min (i.e., 1.0 to 15.0 dg/min) (for claim 17) and a density of 0.850 to 0.875 g/cc (for claim 17) (0069); the prior art first polyolefin therefore corresponds to the claimed first interpolymer (a) (for claim 17). Said second polyolefin preferably has a melt index of 400 to 600 g/10 min (i.e., 400 to 600 dg/min), overlapping the claimed range (for claims 16, 17); the prior art second polyolefin therefore corresponds to the claimed second interpolymer (b) (for claim 17).
The prior art first and second polyolefins have melt index values in the ranges of 1.0 to 15.0 dg/min and 400 to 600 dg/min, respectively. The ratio of melt indices therefore ranges from (400/15.0) to (600/1.0)-i.e., from about 26.7 to 600. Substituting the maximum value for this ratio into the required relationship yields the following.
y ≤ 1.26ln(600) - 3.90
y ≤ 1.26(6.39) - 3.90
y ≤ 8.06 – 3.90
y ≤ 4.16
Li Pi Shan teaches a modifier comprising 20 to 90 wt% first polyolefin, 30 to 70 wt% second polyolefin, and the block composite. Note that the prior art modifier is required to contain a minimum of 10 wt% of the block composite (abstract). As such, an ordinary artisan will recognize that when the modifier comprises 30 wt% of the second polyolefin, the maximum amount of first polyolefin is 100-10-30 = 60 wt%, corresponding to a weight ratio (y) of 30/60 = 0.5. Similarly, when the amount of second polyolefin is the maximum amount of 70 wt%, the amount of first polyolefin is 100-10-70= 20 wt%. The ratio (y) therefore has a maximum value of 70/20 = 3.5. The weight ratio (y) for the prior art modifier therefore ranges from 0.5 to 3.5; note that this is entirely encompassed by the range required by the relationship y ≤ 1.26ln(600) - 3.90 (for claim 17).
Li Pi Shan does not specifically disclose the production of a modifier composition wherein the sum of the amounts of the first copolymer and the second copolymer is greater than or equal to 75 wt% (for claim 1) or having the recited melt indices (for claim 17).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05). The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare the claimed composition in view of the teachings of Li Pi Shan.
Response to Arguments
Applicant’s arguments, see page 11, filed 1/29/2026, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) over Li Pi Shan have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Li Pi Shan under 35 U.S.C. 103 as discussed earlier in this Action.
Applicant’s arguments that the prior art does not teach or suggest a composition comprising a polymer having a melt index greater than or equal to 600 dg/min as required by new claim 17 (see page 7: last paragraph) or containing greater than or equal to 75 wt% first and second interpolymers (Page 11: last paragraph) as required by amended claim 1 are not persuasive per the reasons outlined earlier in this Action with respect to the rejection under 35 U.S.C. 103.
Allowable Subject Matter
Claim 18 is allowed.
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The following references are relevant to the patentability of the claimed invention.
Li Pi Shan et al, WO2017/173293: As discussed above, Li Pi Shan discloses a composition comprising first and second polyolefins. Note that the prior art composition is taught to be a modifier composition which is added to a polypropylene base resin (¶0093-0097). While the prior art does teach the production of articles such as containers (¶0093), the composition used to make such articles comprises at most 40 wt% of the modifier composition (¶0094); as such, the sum of the amounts of the first and second polyolefins in the final composition will be less than 40 wt%. The composition used to make the articles taught by Li Pi Shan therefore does not comprise the first and second polyolefins in a combined amount ≥ 60 wt% as required by claim 18 or ≥ 75 wt% as required by claim 15.
Pesek et al, WO2020/010052 discloses a composition comprising the commercial polymers ENGAGETM 8400 and AFFINITYTM GA 187 which satisfies the recited relationship (see Table 1: Inventive example 1). Note, however, that the inventive examples all comprise 80 wt% of a calcium carbonate filler. Furthermore, Pesek specifically teaches that the prior art composition is required to contain a minimum of 50 wt% filler (abstract; page 2: lines 17-25), which inherently limits the maximum value for the sum of the first and second ethylene/olefin copolymers in the prior art composition to 50 wt%. Pesek therefore does not teach a composition comprising 60 wt% or more of the first and second ethylene/olefin copolymers as required by the instant claims.
The art of record therefore does not teach nor does it suggest the production of an article comprising a component made from a composition that simultaneously meets the claimed combination of limitations of containing 60 wt% or more of first and second interpolymers as defined in the claims and satisfying the relationship y ≤ 1.26ln(x) – 3.90.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765